Tequila Cuervo, S.A. de C.V. v Empresa Cubana del Tabaco, et al, 2015 FCA 15 (Noël C.J. and Scott and Boivin J.A.)
January 21, 2015
Chantal Bertosa for Tequila Cuervo, S.A. de C.V.
Jonathan Roch for Empresa Cubana del Tabaco, trading also as Cubatabaco, and Corporation Habanos S.A.
Tequila Cuervo appealed from a decision of the Federal Court in which Justice Snider had reversed a decision of the Trade-marks Opposition Board, refusing an application for the trade-mark Lazaro Cohiba on the basis of new evidence adduced on appeal under s. 56 of the Trade-marks Act.
Before the Opposition Board, Empresa Cubana alleged, among other grounds, that there was a likelihood of confusion between the Lazaro Cohiba mark (applied for in association with rum) and its own Cohiba registrations (registered and used in association with various types of tobacco and smoking accessories). In rejecting the opposition, the Board made particular note of the apparent gulf in the nature of the parties’ goods and their channels of trade, and the fact that Empresa Cubana had shown that its Cohiba marks were only “known to some extent” in Canada.
Before the Federal Court, Empresa Cubana put forward new evidence, including expert evidence, aimed particularly at showing the “iconic” status of the Cohiba brand and the linkage between alcohol products and tobacco products. Justice Snider found that this new evidence would have materially affected the Board’s decision, and so reviewed the correctness of that decision on the basis of all of the evidence.
In so doing, Justice Snider found that Cohiba was a famous brand, having been referenced widely in film, television, music, and print magazines distributed in North America. More than that, however, Justice Snider relied on expert evidence on brand identity and pop culture to find that based on references to the mark in television and film that “Cohiba carries with it an iconography of social status, wealth, power or intrigue...in the minds of not just purchasers, but in the general public” and that the Cohiba mark had an ability “to evoke an instant association in the audience’s mind” which was “evidence of the fame of the mark”.
Justice Snider also considered expert evidence which established that smokers are more likely to be consumers of alcohol products, and that there is a linkage between those products in the minds of consumers, and also overlap in the trades of those goods in Canada. Based on this evidence, Justice Snider accepted that there was an “interplay” between cigars and hard spirits which was “enhanced through the media” in which “cigars and alcohol are consistently paired”.
On the strength of the new evidence, the Federal Court allowed the appeal, finding that there was a likelihood of confusion between the marks, as the casual consumer seeing a bottle of rum with the label Lazaro Cohiba would be likely to believe that the rum was related to the Cohiba tobacco products.
Before the Federal Court of Appeal, Tequila Cuervo took issue with the Federal Court’s approach to confusion, asserting that Justice Snider had improperly elevated the “fame” of the Cohiba mark as a determinative factor in the confusion analysis. In very brief reasons delivered from the bench, the Federal Court of Appeal dismissed the appeal finding that there had been no such error committed.
By: James Green, Gowling Lafleur Henderson LLP